T 2285/19 - Interlocutory revision

Key points

• The applicant appeals against the refusal of the patent application. The Board concludes that: " the amendments to the claims of the main request clearly overcome the sole objection raised by the examining division against claims 1 and 6 of auxiliary request 2 on which the decision under appeal was based." 
• The Board concludes that the ED should have granted interlocutory revision: "An appeal is to be considered well founded within the meaning of Article 109(1) EPC if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. Other objections which may arise in the main request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC". 
• Note that admissibility under Art.12 RPBA is not mentioned as a factor for Art.109 EPC. See T 0682/22.
• "  In view of the board's findings in point 2. above, the examining division could reasonably have been expected to recognise that the amendments made to the claims of the current main request overcame the sole ground for refusing then auxiliary request 2, and should have rectified its decision." 
• The Board does not conclude that this is a substantial procedural violation. This conclusion aligns with T 1060/13 and T 0682/22. 
• The Board remits the case and refunds the appeal fee at 25% because the request for oral proceedings was withdrawn in time (the withdrawal was conditional on the remittal). 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/en/boards-of-appeal/decisions/t192285eu1

2.4 Therefore, the amendments to the claims of the main request clearly overcome the sole objection raised by the examining division against claims 1 and 6 of auxiliary request 2 on which the decision under appeal was based.

3. Interlocutory revision (Article 109(1) EPC)

3.1 Under Article 109(1) EPC, if the department whose decision is contested considers the appeal to be admissible and well founded, it must rectify its decision. Hence, under these conditions, there is no room for discretion of the first-instance department in applying the provision of Article 109(1) EPC to rectify its decision (see also Case Law of the Boards of Appeal of the European Patent Office, 10th edition, 2022, "Case Law", V.A.2.9.2).

An appeal is to be considered well founded within the meaning of Article 109(1) EPC if the main request submitted with the appeal includes amendments which clearly overcome the objections on which the decision relies, such that the examining division could reasonably be expected to recognise this and thus rectify its decision. Other objections which may arise in the main request but which were not the subject of the contested decision cannot preclude the application of Article 109(1) EPC (see Case Law, V.A.2.9.3; decision T 139/87, OJ EPO 1990, 68, point 4 of the Reasons; decision T 691/18, point 2 of the Reasons).

3.2 These principles were also reflected in the Guidelines for Examination in the European Patent Office in the November 2018 edition, in force at the time the decision under appeal was issued (see OJ EPO 2018, A73). See, for instance, chapter E-XII, section 7.1, fourth paragraph:

"The department concerned will rectify its decision if convinced in the light of the grounds of appeal that the appeal is admissible and well founded. This could arise, for example, because: ... (iii) the decision of the department concerned does not appear to be incorrect, but the applicant ... files amendments to the application, which overcome the objections of the decision under appeal (see T 139/87)."

and chapter E-XII, section 7.4.2, first sentence:

"If amendments clearly overcome the grounds for refusal, interlocutory revision is granted even if further new objections arise."

These passages remain unamended in the current edition of the Guidelines for Examination of March 2023.

3.3 In view of the board's findings in point 2. above, the examining division could reasonably have been expected to recognise that the amendments made to the claims of the current main request overcame the sole ground for refusing then auxiliary request 2, and should have rectified its decision.

4. Remittal (Article 111(1) EPC, Article 11 RPBA 2020)

4.1 Under Article 111(1) EPC, the board, in deciding upon the appeal, may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

Pursuant to Article 11 RPBA 2020, which applies in the case in hand in accordance with Article 25(1) RPBA 2020, a remittal should be the exception, requiring special reasons for it to be ordered.

4.2 According to case law of the boards of appeal, the primary function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a department of first instance. Article 12(2) RPBA 2020 now expressly states that the primary object of the appeal proceedings is a judicial review of the decision under appeal.

4.2.1 In the case in hand, the examining division's decision for then auxiliary request 2, on which the current main request is based, was limited to the issue of unallowable amendments (Article 123(2) EPC).

4.2.2 Hence, there is no assessment of novelty or inventive step by the examining division for the subject-matter of the claims of the current main request.

The examining division's conclusion that the subject-matter of claim 1 of the then main request lacked novelty over the disclosure of document D1 was not based on a proper comparison of the features of the claim with the disclosure of document D1. On the basis of this perfunctory analysis, the board is not in a position to assess whether the subject-matter of the claims of the current main request meets the requirements of patentability.

If the board were not to remit the case, it would have to assess for the first time whether the subject-matter of the independent claims of the current main request was new and involved an inventive step (Articles 54(1) and 56 EPC), which would run counter to the primary object of appeal proceedings (Article 12(2) RPBA 2020).

Moreover, the board doubts that document D1 - the only prior-art document cited in the first-instance proceedings - constitutes a suitable starting point for the assessment of patentability as it does not appear to be concerned with fundamental concepts on which the claimed invention is based (providing an illusion of motion or extracting characteristics of moving images for providing the illusion). Since the examining division did not consider any of the documents cited in the application, the board would even have to determine whether an additional search was necessary.

4.3 In the board's view, the circumstances set out in point 4.2 above represent special reasons within the meaning of Article 11 RPBA 2020 for remitting the case.

4.4 Consequently, the board exercises its discretion under Article 111(1) EPC to remit the case to the department of first instance for further prosecution.

4.5 The appellant withdrew its auxiliary request for oral proceedings on condition that the case be remitted to the examining division for further prosecution. Therefore, the board is in a position to decide on the case without holding oral proceedings.

5. Reimbursement of the appeal fee (Rule 103(4)(c) EPC)

5.1 Under Rule 103(4)(c) EPC, the appeal fee must be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place.
5.2 The requirements for partial reimbursement of the appeal fee under Rule 103(4)(c) are met in the case in hand since the appellant withdrew its request for oral proceedings within the prescribed period and no oral proceedings took place. Therefore, the appeal fee must be reimbursed at 25%.

Order



For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution.

3. The appeal fee is to be reimbursed at 25%.